Altria Group, Inc. and Altria Group Distribution Company v. Zhichao Yang
Claim Number: FA1702001718752
Complainant is Altria Group, Inc. and Altria Group Distribution Company (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <altriaemployees.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 23, 2017; the Forum received payment on February 27, 2017.
On February 23, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <altriaemployees.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@altriaemployees.com. Also on March 2, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant registered the ALTRIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,029,629, registered Dec. 13, 2005). Respondent’s <altriaemployees.com> mark is confusingly similar as it incorporates the entire ALTRIA mark and merely adds the generic term “employees”.
Respondent has no rights or legitimate interests in <altriaemployees.com>. Respondent is not commonly known by the ALTRIA mark, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use the mark in a domain name. Respondent also doesn’t use the disputed domain for any bona fide offering of goods or services because the domain name resolves in a webpage offering advertisements and links to third-party websites, presumably to generate click-through revenue.
Respondent registered and uses the <altriaemployees.com> in bad faith. Respondent uses the disputed domain name to generate click-through revenue by offering hyperlinks and advertisements to users seeking Complainant. Further, Respondent attempts to confuse prospective users into believing an association exists between Respondent and Complainant. Finally, Respondent must have had actual or constructive knowledge of Complainant’s mark because the only distinctive term in the disputed domain name is the ALTRIA mark, registered by Complainant, to which Respondent has no legitimate affiliation.
B. Respondent
Respondent did not submit a Response in this Proceeding.The Panel notes that Respondent first registered <altriaemployees.com> on November 1, 2016.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is the parent company to well-known tobacco companies. The companies manufacture products including cigarettes, smokeless tobacco, cigars, and electronic cigarettes. Complainant claims it registered the ALTRIA mark with the USPTO (e.g., Reg. No. 3,029,629, registered Dec. 13, 2005). Panels have established that registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel finds that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <altriaemployees.com> is confusingly similar as it fully incorporates its mark and adds a descriptive or generic term. Similar changes in marks have not sufficiently distinguished marks from domain names for these purposes. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Here, Respondent incorporates the ALTRIA mark and adds the generic term
“employees”. Therefore, the Panel agrees that Respondent has not included elements in the domain name that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in <altriaemployees.com>. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Zhichao Yang” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the ALTRIA mark. Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not provided Respondent with permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by <altriaemployees.com> under Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent’s actions do not constitute a bona fide offering of goods or services because Respondent, likely to garner pay-per-click fees, directs users to websites in direct competition with Complainant. Prior Panels have concluded that such conduct demonstrates lack of a bona fide offering of goods or services. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant offers that the <altriaemployees.com> domain name resolves in a webpage offering advertisements and links to unrelated third-party websites, presumably to generate click-through revenue. The Panel agrees that Respondent does not use the disputed domain for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Thus, Complainant has also satisfied ¶ 4(a)(ii) of the Policy.
Complainant contends that Respondent uses the disputed domain name in bad faith to commercially benefit from pay-per-click fees and to redirect users to websites in direct competition with Complainant. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Panel agrees, and finds that Respondent’s click-through scheme constitutes bad faith use of the domain name.
Complainant further claims that Respondent had knowledge of Complainant’s mark because the only distinctive term in the disputed domain name is the ALTRIA mark, registered by Complainant, to which Respondent has no legitimate affiliation and which Respondent incorporated in its entirety in the domain name. The Panel agrees with Complainant, and infers that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied ¶ 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <altriaemployees.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 17, 2017
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